A word or logo can only function as a trademark if it is distinctive (i.e., capable of identifying and distinguishing the goods and services with which it is used from others’ goods and services) and, as most readers of this blog will readily recognize, a trademark’s distinctiveness ranges along a spectrum, sometimes called a hierarchy of marks. In order from least distinctive to most distinctive, the categories of distinctiveness are: generic, descriptive, suggestive, arbitrary, and fanciful.
Marks that are suggestive, arbitrary, or fanciful are deemed sufficiently distinct to automatically function as trademarks. Descriptive marks, on the other hand, are not considered inherently distinctive, and can only function as a trademark if they have obtained secondary meaning (also known as acquired distinctiveness) in the minds of consumers. Generic terms are common identifiers for a type or category of product or service (e.g., “E-MAIL” used to identify an e-mail service, or “FITNESS CENTER” used to identify fitness centers or gyms) and, as such, the law does not allow these types of terms to be protected as proprietary to one party and registered as trademarks. This treatment of generic terms is based on the principle that people and companies deserve the right to accurately identify and describe their products and services, and granting a single party an exclusive right to a generic term would unfairly impede competition.